Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Dec 8, 2021

2020005004 (P.T.A.B. Dec. 8, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/166,197 01/28/2014 Rod D. Waltermann RPS920130175USNP(710.300) 5699
58127 7590 12/08/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2674
MAIL DATE DELIVERY MODE
12/08/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROD D. WALTERMANN and MARK EVAN COHEN

Appeal 2020-005004
Application 14/166,197
Technology Center 2600
____________

Before JOHNNY A. KUMAR, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
Lenovo (Singapore) PTE. LTD. Appeal Br. 3.
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Application 14/166,197

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STATEMENT OF THE CASE
Appellant’s disclosure is directed to adjusting speech recognition
using contextual information. Abstr., Spec. ¶¶ 3, 29; Fig. 3.
Claim 1 is representative2 of the invention and reads as follows
(emphasis added):
1. A method, comprising:
obtaining, using a processor, contextual information
relating to an information handling device;
adjusting, before receipt of any user speech input, using a
processor, an automated speech recognition engine using the
contextual information, wherein the adjusting comprises
selecting a knowledge domain based on the contextual
information for the automated speech recognition engine;
thereafter receiving, at an audio receiver of the
information handling device, user speech input; and
providing, using a processor, recognized speech based on
the user speech input received and the contextual information
adjustment to the automated speech recognition engine.
Appeal Br. 24 (Claims Appendix).
REFERENCES AND REJECTION
The prior art relied upon by the Examiner is:
Name Reference Date
Erhart et al. US 2014/0081636 A1 Mar. 20, 2014
Farraro US 2014/0324428 A1 Oct. 30, 2014

2 Based on Appellant’s arguments (Appeal Br. 16–23) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
rejection of claims 1–20 on the basis of representative claim 1.
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Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Farraro and Erhart. Final Act. 2–5.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. Arguments which Appellant could have made, but did not
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). On the
record before us, we are persuaded the Examiner has erred.
In the Final Action, the Examiner finds the combination of the
teachings of Farraro and Erhart teaches the limitations of representative
claim 1 and provides reasoning why one of ordinary skill in the art would
have been motivated to combine the teachings. Final Act. 2–3 (citing
Farraro, Abstract; Figs. 2, 5–7, ¶¶ 12, 13, 24–31; Erhart ¶¶ 6–8, 29, 30, 74–
96; Fig. 4).
The Examiner finds Farraro does not teach the limitation “adjusting,
before receipt of any user speech input, using a processor, an automated
speech recognition engine using the contextual information” (also referred to
as “disputed limitation”), and relies on Erhart for this limitation. Final Act.
3.
Appellant argues, inter alia, the Examiner errs because Erhart does
not teach the disputed limitation. Appeal Br. 21–22. According to
Appellant, Erhart’s accessing a user’s social media account to collect
information to precache information that may be questioned is clearly
distinguishable from the Applicant’s claimed limitations. Id. Appellant
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argues the cited selection methods cannot be “‘adjust[ed], before receipt of
any user speech input, an automated speech recognition engine using the
contextual information, wherein to adjust comprises selecting a knowledge
domain based on the contextual information for the automated speech
recognition engine’ because of the selection methods and techniques
described throughout each references’ [Farraro and Erhart] specification.”
Id.
In the Answer, the Examiner reiterates findings and additionally refers
to Prior Board Decision, Appeal 2018-003455 (PTAB Dec. 20, 2018)
(hereinafter referred to as “Prior Decision”). Ans. 9–11. The Examiner
quotes portions of the Prior Decision to support its findings. Id. The
Examiner asserts the Prior Decision agreed with the Examiner that “Farraro
clearly teaches adjusting ASR based on contextual information relating to an
information handling device before subsequent speech input.” Id. at 9–10.
However, the Examiner states “Farraro fails to teach and/or suggest
adjusting ASR, before receipt of ANY user speech input, wherein the
adjusting comprises selecting a knowledge domain based on the contextual
information.” Id. at 12. This is the disputed limitation of representative
claim 1.
The Examiner notes that Erhart is relied upon for teaching the
disputed limitation. Ans. 12. The Examiner refers to the same portions of
Erhard as in the Final Action, and additionally sets forth the full Erhart
paragraphs 29, 74, 54, 74, 75, 82, 83, and 84, including highlighted portions
of each of these paragraphs. Id. at 12–15.
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In the Reply Brief, Appellant reiterates arguments presented in the
Appeal Brief regarding Erhart and argues the Examiner errs in finding Erhart
teaches the disputed limitation. Reply Br. 23–24.
As discussed below, we are persuaded by Appellant’s arguments
because, on the record before us, the Examiner does not sufficiently present
evidence that Erhart teaches the disputed limitation which recites “before
receipt of any user speech input” (emphasis added).
We agree with the Examiner’s finding that Farraro teaches
representative claim 1 except for the disputed limitation recitation of “any.”
However, the Examiner does not sufficiently identify portions of Erhart that
teach the disputed limitation.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citation omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
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that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
The plain and ordinary meaning of “adjusting, before receipt of any
user speech input” in the disputed limitation is the adjusting occurs before
receipt of user speech input. The limitation does not include a situation in
which the adjustment takes place after receipt of user speech input. The
limitations use of the term “any” precludes a situation in which an
adjustment takes place after receipt of user speech input, even if the receipt
of user input is limited or of small duration. The adjustment always takes
place before receipt of any user speech input. This above interpretation is
broad and reasonable and we note that the Specification does not describe
the meaning of “any” and does not appear to use the term “any.” This
interpretation is not inconsistent with the Specification. Additionally, as
discussed supra, the disputed limitation was added to the claim of the Prior
Decision which did not include the term “any.” The interpretation of the
disputed limitation in representative claim 1 is consistent with the claim
interpretation of the Prior Decision, with which we agree.
Although Erhart teaches receiving speech and adjusting ASR
(automatic speech recognition) by receiving social network information,
there is no identified Erhart teaching in which the Erhart ASR is adjusted
“before receipt of any user speech input.” Instead, the identified Erhart
teaching describes two channels that collaborate to adjust the speech, with
no identified teaching that the Erhart ASR is always adjusted prior to the
speech input. For, example, in describing Figure 4, Erhart refers to step 404
speech utterance and parallel step 404 social network feeds. Erhart
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¶ 94. The Examiner’s highlighting identified Erhart paragraphs does not
cure this deficiency because the highlighted portions do not teach the
disputed limitation, and the Examiner does not provide additional findings
why one of ordinary skill in the art would understand that the highlighted
portions do teach the disputed limitation.
Accordingly, the Examiner does not provide prima facie support for
the rejection. “[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On the record before us, we are persuaded by Appellant’s arguments
because the Examiner provides insufficient evidence to support the findings
and conclusions. Therefore, on the record before us, we are constrained to
conclude the Examiner errs in rejecting representative claim 1, as well as
independent claims 11 and 20, which recite similar limitations, and
dependent claims 2–10 and 12–19.
Further, as discussed, supra, regarding claim interpretation, the
Specification does not define the term “any” nor use the term in describing
the various embodiments. This raises a potential issue that the disputed
limitation does not meet the requirement of § 112 (written description). A
written “description must ‘clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991)). “In other words, the test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
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matter as of the filing date.” Id. (citing Vas-Cath, 935 F.2d at
1563). “Although [the applicant] does not have to describe exactly the
subject matter claimed, . . . the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she] invented what is
claimed.” Vas-Cath, 935 F.2d at 1563 (alteration in original) (quoting In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). Put another way, “the
applicant must . . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Id. at 1563–64.
In view of the above, although the record before us may suggest that
the Applicant was not in possession of the invention under § 112 (written
description), the only rejection before us is § 103. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 10.2019, rev. June
2020).
Further, as discussed supra, the Prior Decision identified by the
Examiner in the Answer is relevant to the case before us. Ans. 9–11. Claim
1 of the Prior Decision is similar to representative claim 1, is rejected under
§ 103 over only Farraro, and is set forth below (emphasis added)
1. A method, comprising:
obtaining, using a processor, contextual information
relating to an information handling device;
adjusting, before receipt of user speech input, using a
processor, an automated speech recognition engine using the
contextual information;
thereafter receiving, at an audio receiver of the
information handling device, user speech input; and
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providing, using a processor, recognized speech based on
the user speech input received and the contextual information
adjustment to the automated speech recognition engine.

Prior Decision 2.
Representative claim 1 recites “adjusting, before receipt of any user
speech input (emphasis added).” In the Prior Decision, the Board agreed
with the Examiner’s claim interpretation that “claim 1 recites ‘before receipt
of user speech input’ and does not recite before ‘any’ or ‘all’ user speech
input.” Prior Decision 3–5. Applying this interpretation, the Board agreed
with the Examiner’s findings that Farraro teaches this limitation, and
affirmed the § 103 rejection solely over Farraro. Id. at 5. We agree that
Farraro teaches this limitation (Prior Board Decision limitation).
Representative claim 1 currently before us adds the term “any” and is
rejected over the combination of Farraro and Erhart. Based on the close
relationship between the Prior Decision and the current case, it is unclear
why Appellant did not identify the Prior Decision as a “Related Appeals and
Interferences” in its Appeal Brief and Reply Brief. See Appeal Br. 4; Reply
Br. 4; 37 C.F.R. § 41.37(c)ii. Instead, Appellant stated “None.” Id.
Additionally, the Examiner referred to the Prior Decision in its Answer, but
Appellant did not address the Prior Decision in its Reply Brief. The record
before us indicates the Prior Decision was available to Appellant prior to
filing the Appeal Brief and Reply Brief:
Prior Decision-mailed 12/20/18
Final Action-mailed 8/22/19
Appeal Brief-filed 1/22/20
Answer-mailed 4/15/20
Reply Brief-filed 6/15/20
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It is important to identify Related Appeals and Interferences in current
Appeals in order to provide a sufficient record to review the current case
before the Board.
Appellant did not identify any related proceedings, including the
earlier appeal, Appeal No. 2018-003455 (Application 14/166,197).
Appellant and Appellant’s counsel are reminded of the obligation to comply
with the requirements of 37 C.F.R. § 41.37(c)(ii), which requires, inter alia,
A statement identifying by application, patent, appeal,
interference, or trial number all other prior and pending
appeals, interferences, trials before the Board, or judicial
proceedings (collectively, “related cases”) which satisfy all of
the following conditions: involve an application or patent
owned by the appellant or assignee, are known to appellant, the
appellant’s legal representative, or assignee, and may be related
to, directly affect or be directly affected by or have a bearing
on the Board’s decision in the pending appeal.

(Emphasis added).

CONCLUSION
For the reasons stated above, we reverse the obviousness rejections of
representative claim 1, independent claims 11 and 20, and dependent claims
2–10 and 12–19.

Appeal 2020-005004
Application 14/166,197

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 103 Farraro, Erhart 1–20

REVERSED